for the eastern district of virginia ... - domain name wire

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

Alexandria Division

CELGENE CORE.,

Plaintiff,

V.

CELLGENE.COM, an Internet Domain Name,

Defendant.

COMPLAINT

Plaintiff Celgene Corporation (“Celgene” or “Plaintiff’), by counsel, alleges as follows for

its Complaint against the Internet domain name cellgene.com (the “Defendant Domain Name”):

NATURE OF THE SUIT

1. This is an in rem action for cybersquatting under the Federal Anti-Cybersquatting

Consumer Protection Act, 15 U.S.C. § 1125(d), and trademark infringement under the Lanham

Act, 15 U.S.C. § 1114(l)(a).

2. Celgene is one of the world’s leading biopharmaceutical companies, whose mission

is to discover, develop and deliver innovative medicines that can improve and extend patients’

lives worldwide. Celgene focuses on, and invests heavily in, the discovery and development of

products for the treatment of severe and life-threatening conditions.

3. Celgene is a world leader in the treatment of many such diseases, including

advanced breast cancer, lung cancer, mantle cell lymphoma, multiple melanoma, myelodysplastic

syndromes, pancreatic cancer and psoriasis. Celgene uses its website at Celgene.com to provide

information to doctors and patients about its innovative therapies.

Civil Action No._

JURY TRIAL DEMANDED

©2019 Wiley Rein LLP. All rights reserved.

Case 1:19-cv-00673-AJT-IDD Document 1 Filed 05/29/19 of 23 PageID# 1

4. The Defendant Domain Name, Cellgene.com—by adding an additional “L” to

Celgene.com—takes advantage of a practice known as typosquatting to misdirect medical

professionals and individuals seeking information about Celgene and its FDA-approved therapies

to a website that, over time, has featured Celgene’s CELGENE and REVLIMID trademarks

together with pay-per-click advertisements and paid search results unaffiliated with Celgene and

featuring information that is, at best unreliable, and at worst, potentially harmful.

5. If the infringement of Celgene’s valuable rights in its famous and/or distinctive

CELGENE mark is allowed to continue, it will cause irreparable harm both to Celgene and the

consuming public. The Court must act to prevent a serial cybersquatter from continuing to profit

off Celgene’s well-earned goodwill in its CELGENE mark.

PARTIES

6. Celgene is a corporation organized and existing under the laws of the State of

Delaware, having a principal place of business at 86 Morris Avenue, Summit, New Jersey 07901.^

7. Defendant cellgene.com is an Internet domain name which, according to records in

the WHOIS database of domain name registrations, is registered in the name of

“PRIVACYDOTLINK CUSTOMER 3949446” with an address of “PO BOX 30485, SEVEN

MILE BEACH GRAND CAYMAN KYl-1202 KY.” A copy of the domain name registration

record for cellgene.com is attached hereto as Exhibit A.

8. On information and belief, “PRIVACYDOTLINK CUSTOMER 3949446” is a

proxy for the actual owner of Defendant cellgene.com, Portmedia Holdings, Ltd., of Hong Kong.

' On January 2, 2019, Celgene entered into a definitive merger agreement with Bristol-Myers Squibb Company (Bristol-Myers Squibb). The companies expect to close the transaction in the third quarter of 2019, subject to customary closing conditions and regulatory approvals.

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JURISDICTION AND VENUE

9. This is a civil action for federal cybersquatting in violation of the Anti-

Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) and for trademark infringement

under the Lanham Act, 15 U.S.C. § 1114(l)(a).

10. This Court has original jurisdiction under 15 U.S.C. § 1121(a) and 28 U.S.C. §§

1331 and 1338(a).

11. This Court has in rem jurisdiction over the Defendant Domain Name pursuant to

15 U.S.C. § 1125(d)(2)(A). In rem jurisdiction is appropriate under 15 U.S.C. §

1125(d)(2)(A)(i)(I) because the registrant of the Defendant Domain Name is a “privacy service”

purportedly located in the Cayman Islands, and therefore Celgene cannot obtain in personam

jurisdiction over a person who would have been a defendant in a civil action under 15 U.S.C. §

1125(d)(1)(A) and/or Celgene has been unable to find a person who would have been a defendant

in a civil action under 15 U.S.C. § 1125(d)(1) because, on information and belief, the true owner

of the domain name is located in Hong Kong.

12. Pursuant to 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(aa), Celgene will give notice of the

violations of Celgene’s rights, and Celgene’s intent to proceed in rem, to the postal and e-mail

addresses set forth in the registration records for the Defendant Domain Name.

13. The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(3) and (4),

states that the in rem action, jurisdiction, and remedies created by the statute are “in addition to

any other civil action or remedy otherwise applicable” and “in addition to any other jurisdiction

that otherwise exists, whether in rem or in personam.”

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14. Venue is proper in this District pursuant to 15U.S.C. § 1125(d)(2)(C) and 28 U.S.C.

§ 1391(b)(2) in that the .COM domain name registry operator, VeriSign, Inc., is situated in this

judicial district, and the Defendant Domain Name is a .COM domain name.

THF PROBLEM OF TYPOSOUATTING

15. Recent studies have shown that over 95% of the 500 most popular sites on the

Internet are the subject of “typosquatting”—registration or use of a domain name that represents a

typographical error of the legitimate site—and which is typically used to display advertisements

related to the legitimate site, to distribute computer viruses or “malware,” or to collect visitors’

personal information for inappropriate or illegal uses.

16. Typosquatting harms consumers by causing confusion with the legitimate sites

being sought by the consumers and very often results in consumers’ computers being infected with

computer viruses, “bloatware” or other unwanted software, consumer’s personal information being

collected and misused, and/or consumers being presented with an endless stream of unwanted

advertisements.

17. Although trademark owners can take certain steps to protect their brands online,

such as defensive registration of domain names, this can be both costly and futile. With up to 37

English letters or numbers in each character of a domain name, the number of typographic

combinations can multiply quickly. For example, there are 333 ways to alter a seven character

domain name by a single character. When accounting for the proliferation of top level domains

(TLDs) (e.g., .com, .net, .org, .co, etc.) and the possibility of multiple character typos, the

possibilities are endless. Indeed, a recent estimate found that 21.2 million dot-com domain names,

or about 20% of all dot-com domain name registrations, consist of typos.

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CELGENE’S RIGHTS

18. Celgene is an integrated global biopharmaceutical company engaged primarily in

the discovery, development, and commercialization of innovative therapies for the treatment of

cancer and inflammatory diseases through next-generation solutions in protein homeostasis,

immuno-oncology, epigenetics, immunology and neuro-inflammation.

19. As one of the largest biotechnology companies in the world, Celgene had 8,852 full

time employees as of December 31, 2018, with operations in 35 countries including Hong Kong.

20. In 2018 alone, approximately 750,000 patients were treated with a Celgene

medicine.

21. Many of Celgene’s pharmaceutical products have been approved by the United

States Food and Drug Administration for the treatment of cancer, blood disease, and other severe

immune and inflammatory conditions. For example, Celgene’s REVLIMID product is currently

approved for the treatment of multiple myeloma (MM), in combination with dexamethasone; MM,

as maintenance following autologous hematopoietic stem cell transplantation (auto-HSCT);

transfusion-dependent anemia due to low- or intermediate-1-risk myelodysplastic syndromes

(MDS) associated with a deletion 5q abnormality with or without additional cytogenetic

abnormalities; and Mantle cell lymphoma (MCL) whose disease has relapsed or progressed after

two prior therapies, one of which included bortezomib.

22. In addition to its eight marketed products, Celgene has one of the most advanced

research engines in the world, sponsoring more than 100 clinical trials examining at least 25 unique

compounds. Celgene also supports more than 500 investigator-initiated trials that use approved

therapies or investigational compounds from Celgene.

5


23. Celgene adopted its famous CELGENE mark in 1986, when it spun off from

Celanese Corporation to become an independent biotechnology company.

24. Celgene’s common stock has been listed on the Nasdaq National Market since

1987.

25. For more than 30 years, Celgene has provided its goods and services, including its

pharmaceutical products, drug delivery compounds, pharmaceutical research, and related goods

and services, in connection with its CELGENE mark.

26. Through Celgene’s promotion of its CELGENE mark, the CELGENE mark has

become famous and/or distinctive throughout the United States in connection with Celgene’s

products and services.

27. The CELGENE mark is entitled to common law trademark rights.

28. In addition to its common law rights in the CELGENE mark, Celgene is the owner

of all right, title, and interest in the following federal trademark registrations, which presently are

valid and subsisting in law:

Reg. No. Reg. Date Mark Goods/Services 2,379,836 08/22/2000

CELGENE IC 005. US 006 018 044 046 051 052. G & S: pharmaceutical preparations for use in the treatment of immunological, inflammatory and neurological disorders. FIRST USE: 19980929. FIRST USE IN COMMERCE: 19980929

2,375,599 06/15/1999

(^^gene

IC 005. US 006 018 044 046 051 052. G & S: pharmaceutical preparations for use in the treatment of immunological, inflammatory and neurological disorders. FIRST USE: 19980929. FIRST USE IN COMMERCE: 19980929

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2,894,547 10/19/2004

^^Sgene

1C 041. us 100 101 107. G& S: educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith. FIRST USE: 19860000. FIRST USE IN COMMERCE: 19860000

1C 042. US 100 101. G & S: research in the fields of chemicals and pharmaceuticals; scientific research services; research and testing services in the fields of chemicals and pharmaceuticals; research and development of new products for others in the fields of chemical and pharmaceuticals. FIRST USE: 19860000. FIRST USE IN COMMERCE: 19860000

2,888,517 09/28/2004

CELGENE 1C 001. US 001 005 006 010 026 046. G & S: biochemical catalysts for use in medical research; biological preparations for medical purposes, namely, for use in the research of immunological, inflammatory and neurological disorders; catalysts for use in the manufacture of pharmaceuticals; chemical preparations, namely, chemical reagents for scientific purposes; [ enzyme preparations for industrial purposes; enzymes for industrial purposes; ] proteins for [ industrial and ] human consumption, namely, animal proteins, genetic testing reagents for scientific laboratory use, namely, DNA probes; [ chemical preparations used to protect crops in the agricultural and horticultural field; ] medicinal and biological preparations for medical laboratory use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of iimnune system. FIRST USE: 19861231. FIRST USE IN COMMERCE: 19861231

1C 005. US 006 018 044 046 051 052. G & S: biological preparations for medical purposes, namely for use in the treatment of iimnunological, inflaimnatory and neurological disorders; pharmaceuticals, genomic and biological agents for use in the fields of immunological, inflaimnatory and neurological disorders for the identification, analysis.

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prevention, detection, diagnosis, prognosis and treatment; biological preparations for nse in medicinal tests, inocnlations, and treatment of diseases, namely, iimnnnological, inflanmiatory and nenrological disorders and cancer; cnltnre media, namely, tissne cnltnre media and bacteriogical cnltnre media for medical nse; medicinal and biological preparations for pharmacentical and clinical nse, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modnlation of iimnnne system. FIRST USE: 19861231. FIRST USE IN COMMERCE: 19861231

1C 041. US 100 101 107. G& S: edncational classes and programs in the field of thalidomide and safety issnes pertaining to thalidomide, and distribntion of written materials therewith. FIRST USE: 19861231. FIRST USE IN COMMERCE: 19861231

1C 042. US 100 101. G & S: research in the fields of chemicals and pharmacenticals; prodnct safety testing in the fields of chemicals and pharmacenticals; research and development of new prodncts for others in the fields of chemicals and pharmacenticals; providing clinical laboratory testing services, namely, pharmacogenetic tests, predictive medical tests, personalized medical tests, gene seqnencing-based tests and genotyping base on the assessment, development and application of genomic discoveries in the pharmacentical, informatics and clinical diagnostic indnstries; providing medical and pharmacentical research information; scientific research services; design for others in the field of DNA-based assays, DNA seqnencing protocols, immnnoassay and methods for dmg discovery; scientific research, namely, development of pharmacenticals or diagnostic methods for others [; agrochemical prodnct development for others ]. FIRST USE: 19861231. FIRST USE IN COMMERCE: 19861231

8


3,439,630 06/03/2008

CELGENE 1C 035. us 100 101 102. G& S: administration of patient reimbursement programs; administering pharmacy reimbursement programs and services. FIRST USE: 20060101. FIRST USE IN COMMERCE: 20060101

4,250,217 11/27/2012

^^gene

1C 005. US 006 018 044 046 051 052. G & S: pharmaceutical preparations for use in the treatment of inununological, inflanunatory and neurological disorders. FIRST USE: 19980929. FIRST USE IN COMMERCE: 19980929

1C 035. US 100 101 102. G& S: Administration of patient reimbursement programs; administering pharmacy reimbursement programs and services. FIRST USE: 19860000. FIRST USE IN COMMERCE: 19860000

1C 041. US 100 101 107. G& S: educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith; education services, namely, providing mentoring, tutoring, classes, seminars, and workshops in the fields of highlighting the advancements made in cancer treatments and discussing the importance of continuing research to develop iimovative new treatments. FIRST USE: 19860000. FIRST USE IN COMMERCE: 19860000

1C 042. US 100 101. G& S: Development and testing services in the fields of biotechnology, chemistry and pharmaceuticals; providing an interactive web site that enables users to enter, access, track, monitor and generate health and medical information and reports; scientific study and research in the fields of the prevention, treatment and management of illness, health care delivery and the scientific aspects of health care policy, health care cost management and financing as these fields impact on quality of health care; research in the fields of chemicals and pharmaceuticals; research and testing services in the fields of chemicals and pharmaceuticals; research and development of new products for others in the fields of chemicals and pharmaceuticals; providing clinical

9


laboratory testing services, namely, pharmacogenetic tests, predictive medical tests, personalized medical tests, gene seqnencing-based tests and genotyping based on the assessment, development and application of genomic discoveries in the pharmacentical, informatics and clinical diagnostic indnstries; scientific research services; scientific research, namely, development of pharmacenticals or diagnostic methods for others. FIRST USE: 19860000. FIRST USE IN COMMERCE: 19860000

1C 044. US 100 101. G & S: providing on-line information in the field of diagnosis and treatment of cancer; providing an on-line compnter database featnring information relating to diagnosis and treatment of cancer; providing medical and pharmacentical information services; providing links to web sites of others featnring information abont the diagnosis and treatment of cancer. FIRST USE: 20010628. FIRST USE IN COMMERCE: 20010628

4,684,855 02/10/2015 1C 009. US 021 023 026 036 038. G & S: Compnter application software for mobile phones, portable media players, handheld compnters, namely, software for nse in database management, for nse in electronic storage of data, for nse as a spreadsheet, and for word processing, all for nse by patients and health care professionals; downloadable software in the natnre of a mobile application for nse in database management, for nse as a spreadsheet, for word processing, for electronic storage of data, all for nse by patients and health care professionals; compnter software for nse on mobile and cellnlar phones in the field of health care and dosing of pharmacenticals for nse in accessing databases and websites in order to provide dmg dosage and administration information; downloadable electronic software for nse on mobile and cellnlar phones, handheld compnters in the field of health care and dosing of pharmacenticals for nse in accessing databases and websites in order to provide dmg dosage and administration information. FIRST USE: 20140200. FIRST USE IN COMMERCE: 20140200

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4,684,854 02/10/2015

CELGENE 1C 009. US 021 023 026 036 038. G & S: Computer application software for mobile phones, portable media players, handheld computers, namely, software for use in database management, for use in electronic storage of data, for use as a spreadsheet, and for word processing, all for use by patients and health care professionals; downloadable software in the nature of a mobile application for use in database management, for use as a spreadsheet, for word processing, for electronic storage of data, all for use by patients and health care professionals; computer software for use on mobile and cellular phones in the field of health care and dosing of pharmaceuticals for use in accessing databases and websites in order to provide dmg dosage and administration information; downloadable electronic software for use on mobile and cellular phones, handheld computers in the field of health care and dosing of pharmaceuticals for use in accessing databases and websites in order to provide dmg dosage and administration information. FIRST USE: 20140200. FIRST USE IN COMMERCE: 20140200

29. A true and correct copy of a representative sample of U.S. trademark registrations

owned by Celgene for its CELGENE marks is attached hereto as Exhibit B.

30. The CELGENE Marks are valid, subsisting, unrevoked and uncancelled. At least

six of the registrations listed above have become incontestable as to all goods and services listed

therein and are conclusive evidence of the validity of the registered mark, Celgene’s ownership

thereof, and of Celgene’s exclusive right to use the mark in commerce on or in connection with

the goods and services identified in the registration, as provided by Section 33(b) of the Lanham

Act, 15 U.S.C. § 1115(b).

31. Celgene has also protected its valuable CELGENE marks throughout the world by

filing for and obtaining more than 100 international trademark registrations.

11


32. Celgene’s flagship domain name, Celgene.com, has been at the core of Celgene’s

marketing and promotional efforts for more than 20 years.

33. Celgene first registered the domain name Celgene.com on June 27, 1996.

34. Celgene has used its domain name at Celgene.com and the corresponding website

to provide information to the public about Celgene’s pharmaceutical products, drugs, research,

important safety information, as well as information about job opportunities and investment

opportunities with the company.

3 5. The Defendant Domain Name represents an unauthorized colorable imitation of the

CELGENE mark, which further demonstrates that the CELGENE mark has acquired

distinctiveness and was famous and/or distinctive prior to the time of registration of the Defendant

Domain Name.

UNLAWFUL REGISTRATION AND/OR USE OF THE DEFENDANT DOMAIN NAME

36. Celgene has engaged in significant efforts to protect consumers by successfully

pursuing administrative actions to obtain the transfer of domain names that infringe upon its

CELGENE mark and were registered and/or used in bad faith. See Celgene Corporation v. Russel,

Cloudcare, D2018-0461 (WIPO May 31, 2018) (directing transfer of cellgenebiotech-bd.com);

Celgene Corporation v. Domain Admin / This Domain is For Sale, Privacy Protected Registrant,

Home of Domains, D2017-1098 (WIPO July 28, 2017) (directing transfer of

celgeneempowered.com); Celgene Corporation v. Name Redacted, D2016-2151 (WIPO Dec. 9,

2016) (directing transfer of celgenecareers.net); Celgene Corporation v. Diana Claire, D2016-

0922 (WIPO July 7, 2016) (directing transfer of celgenepharma.com); Celgene Corporation v.

Kerry A. Simpson, D2016-0757 (WIPO July 7, 2016) (directing transfer of celgenecorp.com)

Celgene Corporation v. Milen Radumilo, D2016-0018 (WIPO Feb. 22, 2016) (directing transfer

12


of celgeneriskmanagement.com); Celgene Corporation v. James Ding, D2013-0970 (WIPO Sept.

18, 2013) (directing transfer of celgenepharm.com); Celgene Corporation v. Ourcelgene.com /

Milan Kovac, D2011-2094 (WIPO Jan. 30, 2012) (directing transfer of ourcelgene.com).

37. Using other counsel, Celgene previously sought to protect consumers through an

administrative proceeding to obtain the transfer of the Defendant Domain Name, but was

unsuccessful under the limited procedures of the Uniform Domain Name Dispute Resolution

Policy. See Celgene Corporation v. PRIVACYDOTLINK Customer 3639471 / Domain

Administrator, Portmedia Holdings Ltd, D2018-2673 (WIPO Feb. 11, 2019). This administrative

decision is not entitled to any deference.

38. The Defendant Domain Name, Cellgene.com, represents a typographical error of

Celgene—adding a single letter “1” in the middle of Celgene’s famous and/or distinctive

CELGENE mark.

39. Upon information and belief, the Defendant Domain Name was registered for the

purpose of obtaining Internet visitors when such visitors make a typographical error on their

keyboard when attempting to reach Celgene.com by typing “Cellgene.”

40. Upon information and belief, the registrant of the Defendant Domain Name,

Portmedia Holdings, is a serial cybersquatter that makes a habit of registering domain names in

bad faith that represent misspellings of famous and/or distinctive marks.

41. Portmedia Holdings and its affiliates have been found to have engaged in

cybersquatting with regard to domain names corresponding to at least five separate third-party

trademarks. See Etsy, Inc. v. Domain Administrator / Portmedia Holdings Ltd.,

FA1710001753224 (FORUM Nov. 27, 2017) (finding bad faith registration of esty.com); The

Weather Underground, Inc. v. Domain Administrator /PortMedia Case No. FA1203001433949

13


(FORUM May 9, 2012) (finding bad faith registration of weatherudnerground.com,

weayherunderground.com, and wundreground.com); Montres Breguet S.A. v. Domain

Administrator / PortMedia, FAl 111001417906 (FORUM Feb. 7, 2012 (finding bad faith

registration ofbreuget.com); Societe Nationale des Chemins de Per Frangais, SNCF v. Moniker

Privacy Services / 3597435 Domain Administrator Port Media Sales, D2011-0527 (WIPO May

27, 2011) (finding bad faith registration of sncftgv.com); 2018120 Ontario Inc. dba BattleGoat

Studios V. Port Media, D2006-0120 (WIPO May 17, 2006) (finding bad faith registration of

supremeruler. com).

42. In other cases, Portmedia Holdings and its affiliates have surrendered domain

names that they registered and/or used in bad faith upon the initiation of an administrative

proceeding rather than receiving yet another finding of cybersquatting. See, e.g. Capital One

Financial Corp. v. PORTMEDIA DOMAINS / PORTMEDIA HOLDINGS LTD,

FA1410001586092 (FORUM Nov. 20, 2014) (agreeing to transfer capitaloneplatinum.com after

filing of UDRP complaint); Officine Panerai A.G. Corp v. PortMedia Holdings Ltd., Portmedia

Domains, D2013-2206 (WIPO Feb. 17, 2014); Anadarko Petroleum Corporation v. Moniker

Privacy Services/ Portmedia, Inc., D2013-0687 (WIPO Sep. 5, 2013) (approving voluntary

transfer of andarko.com).

43. Portmedia Holdings and its affiliates are currently the registrants of a number of

additional domain names that correspond to famous and/or distinctive marks, including

tataaiginsurance.com (Tata AIG General Insurance Company); calbagmetals.com (Calbag Metals

Company); and atomicarts.com (Atomic Arts).

44. Given Portmedia Holdings’ use of a proxy service to disguise its registration of the

Defendant Domain Name, it most likely is the registrant of many additional domain name that

14


correspond to famous and/or distinctive marks and, on information and belief, such additional

cybersquatted domain names will be disclosed through discovery in this action pursuant to 15

U.S.C. § 1125(d)(l)(B)(i)(VIII).

45. The Defendant Domain Name has repeatedly been configured to display pay-per-

click advertisements relating to Celgene, its successful biopharmaceutical business, and its

pharmaceutical products (including Celgene’s REVLIMID product) when the visitors were

actually seeking Celgene’s own website at Celgene.com.

46. A true and accurate archived screenshot of the Defendant Domain Name’s landing

page as of May 16, 2016, as captured by DomainTools, is shown below, and includes misuse of

Celgene’s REVLIMID and CELGENE trademarks.

47. On September 29, 2015, May 16, 2016, October 21, 2017, and September 25, 2018,

the first link displayed at the landing page at the Defendant Domain Name was for “Celgene Jobs.”

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Other links displayed at those times included “Celgene Corp Stock Price,” “Celgene Quote,”

“Revlimid,” and “Celgene.”

48. True and accurate archived screenshots of the Defendant Domain Name’s landing

page as of September 29, 2015, October 21, 2017, September 25, 2018, as captured by

DomainTools, are shown below:

16


2017-0#-21

Click here to buy cellgene.com for your website name!

cellgene.com

Related Links

» Celqene Jobs

» Celqene

» Pharmaceutical Scientist Jobs

» Top 10 Jobs

» Pharmaceutical Scientist Jobs

» Business Jobs

» Pharma Requlatory Jobs

» Projectmanaqer Jobs

» Italy Jobs

» Bioinformatics Manaqer Jobs

49. As of November 11, 2018, of the five links displayed at the landing page at the

Defendant Domain Name, the first three included unauthorized use of the CELGENE Mark

including “Celgene Jobs,” “Celgene,” and “Celgene Jobs.”

17


50. A true and accurate printout from the landing page for the Defendant Domain Name

as of November 19, 2018 is shown below:

iIj'I 9/201 a cellgene.conrt

Cellgene.com

Related Links

2018 Copyright. All Rights Reserved.

I'he Sponsored Instings displayed above are served aolomatically by a third party. Neither the service provider nor the domain owner maintain any lelationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).

Privacy

51. Upon information and belief, the registrant of the Defendant Domain Name

received compensation when Internet visitors, who were attempting to reach Celgene.com, clicked

on a link provided by Defendant Domain Name to a third-party website.

52. In addition to including pay-per-click advertisements, the Defendant Domain Name

has also been configured at times to display a request for the visitor to update his or her Adobe

Flash software. Such pop-up download requests are commonly associated with distribution of

malware. Upon information and belief, a user visiting the Defendant Domain Name and clicking

on the request could unwittingly download malware, spyware, or other software that would

intentionally harm the visitor’s computer.

53. The use of the CELGENE and REVLIMID marks within the Defendant Domain

Name and/or associated websites is without authorization from Celgene.

54. Upon information and belief, the Defendant Domain Name does not reflect the legal

name of the registrant of the Defendant Domain Name.

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55. Upon information and belief, the registrant of the Defendant Domain Name has not

engaged in bona fide noncommercial or fair use of the CELGENE mark in a website accessible

under the Defendant Domain Name.

56. The websites displayed by the registrant of the Defendant Domain Name are likely

to be confused with Celgene’s legitimate online location at Celgene.com.


registered the Defendant Domain Name with intent to divert consumers away from Celgene’s

online location at Celgene.com, for commercial gain, by creating a likelihood of confusion as to

the source, sponsorship, affiliation or endorsement of the Defendant Domain Name and the sites

displayed through use of the Defendant Domain Name.

58. On or around September 11, 2018, the registrant of the Defendant Domain Name

offered to sell the domain name for $7,500 despite the fact that the registrant had not used, and

had no intent to use, the domain name in the bona fide offering of any goods or services.


provided material and misleading false contact information when applying for and maintaining the

registration of the Defendant Domain Name in that the person or entity identified as the

registrant of the Defendant Domain Name is not the true owner of the domain name. Upon

information and belief, the registrant of the Defendant Domain Name uses a service that replaces

the domain name owner’s contact information with the name “PRIVACYDOTLINK CUSTOMER

3949446” and thereby conceals the identity of the true owner of the domain name.

COUNT ONE: Violation of the Federal Anti-cybersquattin2 Consumer Protection Act

60. Celgene repeats and realleges each and every allegation set forth in the foregoing

paragraphs, as though fully set forth herein.

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61. Celgene’s federally-registered CELGENE mark is famous and/or distinctive and

was famous and/or distinctive prior to the time of registration of the Defendant Domain Name.

62. The aforesaid acts by the registrant of the Defendant Domain Name constitute

registration, maintenance, trafficking in, or use of a domain name that is confusingly similar to

Celgene’s CELGENE mark, with bad faith intent to profit therefrom.

63. In light of the registrant’s concealment of the identity of the true owner of the

Defendant Domain Name, Celgene is not able to obtain injurisdiction over the registrant

of the Defendant Domain Name or any other person who would have been a defendant in a civil

action under 15 U.S.C. § 1125(d)(1)(A).

64. On information and belief, the actual registrant of the Defendant Domain Name is

based in Hong Kong, and therefore, Celgene, despite its due diligence, has been unable to find a

person who would have been a defendant in a civil action under 15 U.S.C. § 1125(d)(1)(A).

65. The aforesaid acts by the registrant of the Defendant Domain Name constitute

unlawful cyberpiracy in violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C.

§ 1125(d)(1).

66. The aforesaid acts have caused, and are causing, great and irreparable harm to

Celgene and the public. The harm to Celgene includes harm to the value and goodwill associated

with the CELGENE mark that money cannot compensate. Unless permanently restrained and

enjoined by this Court, said irreparable harm will continue. Thus, pursuant to 15 U.S.C. §

1125(d)(2)(D)(i), Celgene is entitled to an order transferring the Defendant Domain Name

registration to Celgene.

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COUNT TWO: In-Rem Trademark Infrin2ement

67. Celgene repeats and realleges each and every allegation set forth in the foregoing

paragraphs, as though fully set forth herein.

68. At the time the Defendant Domain Name was registered and/or used, Celgene

possessed valid federal trademark rights in the famous and/or distinctive CELGENE mark.

69. In light of the registrant’s concealment of the identities of the true owner of the

Defendant Domain Name, Celgene is not able to obtain injurisdiction over the registrant

of the Defendant Domain Name or any other person who would have been a defendant in a civil

action under 15 U.S.C. § 1125(d)(1)(A).

70. On information and belief, the actual registrant of the Defendant Domain Name is

based in Hong Kong, and therefore, Celgene, despite its due diligence, has been unable to find a

person who would have been a defendant in a civil action under 15 U.S.C. § 1125(d)(1)(A).

71. The registration and/or use of the Defendant Domain Name is a use in commerce.

72. The registration and/or use of the Defendant Domain Name affects Celgene’s

ability to use its CELGENE mark in commerce.

73. The Defendant Domain Name and its registrant have no valid rights in the

CELGENE mark.

74. At the time the Defendant Domain Name was registered and/or used, the Defendant

Domain Name and its respective registrant were on actual and/or constructive notice, pursuant to

Section 22 of the Lanham Act, 15 U.S.C. § 1072, of the existence of Celgene’s superior rights in

its CELGENE mark by reason of the existence, at that time, of Celgene’s federal trademark rights.

75. Use of the CELGENE mark by the Defendant Domain Name and its registrant is

without the permission or authorization of Celgene.

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76. The aforesaid registration and/or use of the Defendant Domain Name has caused

and is likely to continue to cause confusion, mistake and/or deception among consumers and the

public, leading the public falsely to believe that the Defendant Domain Name and/or websites

provided thereunder are those of, are sponsored or approved by, or are in some way connected

with Celgene.

77. The aforesaid registration and/or use of the Defendant Domain Name constitutes

direct infringement of Celgene’s trademark rights in violation of Section 32(1) of the Lanham Act,

15U.S.C. § 1114(1).

78. The aforesaid acts have caused, and are causing, great and irreparable harm to

Celgene and the public. The harm to Celgene includes harm to the value and goodwill associated

with the CELGENE mark that money cannot compensate. Unless permanently restrained and

enjoined by this Court, said irreparable harm will continue.

PRAYER FOR RELIEF

WHEREFORE, Celgene respectfully requests of this Court:

1. That judgment be entered in favor of Celgene on its claims of cybersquatting and

trademark infringement.

2. That the Court order the Defendant Domain Name be transferred to Celgene

through transfer by VeriSign, Inc. of the Defendant Domain Name from the current domain name

registrar to Celgene’s domain name registrar of choice and by such registrar’s change of the

registrant to Celgene.

3. That any other domain names registered by the registrant of the Defendant Domain

Name that resemble or include the CELGENE mark be transferred to Celgene.

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4. That the Court order an award of costs and reasonable attorney’s fees incurred by

Celgene in connection with this action pursuant to 15 U.S.C. § 1117(a); and

5. That the Court order an award to Celgene of such other and further relief as the

Court may deem just and proper.

Jury Trial Demanded.

Dated: May 29, 2019 By: _/s/ Attison L. Barnes, III /s/_ Attison L. Barnes, III (VA Bar No. 30458) David E. Weslow {forpro hac admission) Ari S. Meltzer {for pro hac admission) Adrienne J. Kosak (VA Bar No. 78631) Wiley Rein LLP 1776K St.NW Washington, DC 20006 (202) 719-7000 (phone) [email protected]

Counsel for Plaintiff Celgene Corporation

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for the eastern district of virginia ... - domain name wire

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